Madrid Mid-Year Update
Statistics
Once again the World Intellectual Property Organisation (WIPO) saw a record number of international trade mark applications filed in the 2007 year. 39,945 applications were received which represents a 9.5 % increase from the same time last year.
Other trends were similarly consistent with figures released for the 2006 year. Germany again ranked number 1 in terms of top filer countries (accounting for 15.2% of the total number of applications filed) followed by France, the United States of America and the European Community. Australia continued its upward growth with an increase of 6.3% (or an increase of 69 applications) from the 2006 year and now ranks 10th rather than 11th on the list of major filing contracting parties.
In terms of most designated contracting parties, China remained at number 1 followed by Russian Federation and United States of America. Australia came in at a respectable 7th position due to an 8% increase from the 2006 figures.
Such statistics clearly indicate strong confidence in the WIPO administered international trade mark filing system.
In or Out
The number of countries and multi-country organisations belonging to the Madrid System, either the Madrid Protocol or the Madrid Agreement, has now reached 82. A current list of member states is available here. Only Madagascar, who acceded to the Protocol in April, has joined the list so far in 2008.
Last year India was reported as being well on its way to accession, as discussed by Nicholas Weston in its previous Madrid update in October 2007. However, a recent parliamentary panel has recommended against it citing insufficient resources, namely manpower and infrastructure, to handle both domestic and international trade mark applications. Similarly, Israel was also set to join the Madrid Protocol and their trade mark law was appropriately amended but accession was then deferred indefinitely, see the article by Michael Factor publisher of The IP Factor.
More positive, yet preliminary, developments have taken place in Thailand this year in the process towards becoming a member of the Madrid Protocol. The proposal to accede to the Paris Convention and the Patent Cooperation Treaty (PCT) was approved by the National Assembly of Thailand and must now be reviewed and approved by His Majesty the King for Royal endorsement.
Finally, there has been ongoing developments in the process towards New Zealand’s accession to the Madrid Protocol but also a number of delays. Circulating rumours are that the Protocol may go live in November 2008.
Amendments to “safeguard clause”
Amendments to the text of Article 9sexies of the Madrid Protocol (commonly known as the “safeguard clause”) will come into effect on 1 September 2008. The amendments which can be found here were adopted late last year by the WIPO Assembly.
Current Article 9sexies, states that in relations between countries bound by both the Madrid Agreement and the Madrid Protocol, the Agreement’s provisions will apply. The revised text provides that for countries bound by both the Madrid Agreement and the Madrid Protocol, only the provisions of the Protocol will apply. This means that as of 1 September 2008, international trade mark registrations will be governed by only the Madrid Protocol unless the relevant party is only a member of the Agreement (this is only 7 countries). This is an important amendment because in certain aspects the Protocol contains less rigorous provisions than the Agreement. For example the Protocol broadens the choice of working languages and provides more flexibility with respect to applicant fees.
However, Article 9sexies (1)(b) as amended, limits the effects of the repeal of the safeguard clause in two situations. Firstly, it renders inoperative a declaration of the Protocol which relates to the option of substituting an 18-month period in which a national office can refuse to extend an international application in place of the 12 month period, and secondly it renders inoperative a declaration of the Protocol that relates to the renewal fees national offices are entitled to charge.
A useful “information kit” that provides further details of the amendment, and may assist in determining when Article 9sexies (1)(b) applies, can be found here.
This is the reason I read www.australiantrademarkslawblog.com. Amazing posts.